A UDRP rejected the complaint of the Irish Road Safety Authority Act, which :has sole authority and competence in Ireland for oversight of the driving licensing system, including management of the driving test, development of driver licensing policy and drafting licensing legislation” on the domain name drivinglicence.ie.

Here are the relevant facts and findings by the one member panel:

The disputed domain name was registered by the Registrant on September 23, 2011.

On March 29, 2012, the Complainant telephoned the Registrant asking if it would transfer the disputed domain name to it.

The Registrant stated that the disputed domain name would be used for a project that was 90% complete, that it was not “looking to sell” but that “everything has a price”.

The Registrant said that a sale would disrupt its plans and that it would not be interested unless there was “a serious bid” of EUR 10,000.

The Complainant made reference to a potential claim via the IEDR but asked for an email to be sent giving the Registrant’s best price and the Complainant would then make a decision as to how to proceed.

At some point thereafter a website appeared at the disputed domain name stating “Coming Soon …. We’re preparing a surprise (scheduled to launch on April-May 2012)” together with a navigation bar with buttons “LEARN TO DRIVE”, “THEORY TEST” and “SIGN UP”.

The parties exchanged emails on March 29, 2012, summarised as follows:

The Complainant stated that it required the disputed domain name as part of its core business and asked how to go about transferring it to the Complainant.

The Registrant said that it could not transfer the disputed domain name because it had invested approximately EUR 12,000 to EUR 15,000 in developing it and that the site would be launched in 1-2 months. The Registrant invited the Complainant to visit the website at the disputed domain name.

The Complainant asked if the work would dovetail with that of the Complainant and enquired what kind of service the site would provide.

The Registrant stated that “our website will be a complete commercial online learning solution for clients looking to prepare better for their theory test and also for the driving test. We will also provide a listing of all driving instructors with multiple facilities.” The Registrant asked for details about the Complainant’s proposed product / service, stating that it did not want to create any conflict.

On March 30, 2012, the Complainant asked for the minimum price at which the Registrant would be willing to sell the disputed domain name to the Registrant.

The Complainant has made longstanding use of the term “driving licence” since its establishment in 2006 and therefore asserts unregistered trade mark rights in this term.

 

“The Complainant is spear-heading a change to the driver licensing system, a key platform of which is the offering of driver testing / licensing processes and information via an online portal. The disputed domain name would be most appropriately used by the Complainant in connection with all of its driving test and licence functions, and the Complainant is the most legitimate user of the disputed domain name.

“As at the date that the Complainant’s first contacted the Registrant, there was no evidence of the Registrant’s bona fide use of the disputed domain name in connection with any genuine business or of any demonstrable preparation to begin using it. There was no content on the relevant web page. However, after the Complainant’s first communication with the Registrant, a temporary web page was applied to the disputed domain name by the Registrant.

“Unlike the Complainant, the Registrant has no rights in law and/or no legitimate interest in the disputed domain name, for the following reasons.

The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a “Protected Identifier” in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, Protected Identifiers include, among others, “trade and service marks protected in the island of Ireland”. The Complainant relies on unregistered trade mark rights in the term “driving licence”.

According to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view is that, in order to establish an unregistered trade mark for the purposes of the UDRP, a complainant:

“must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition[.]”.

The panel in Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002 considered that this approach applied equally to the Policy.

Paragraph 1.7 of WIPO Overview 2.0 also states that:

“Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.”

It is immediately apparent that the Complainant faces a steep uphill task in demonstrating that the descriptive, dictionary term “driving licence” has in any sense become distinctive of the Complainant.

Indeed, the Complainant acknowledges that the term is highly descriptive but nonetheless claims that it has acquired the requisite level of distinctiveness.

But the Complainant has not explained how such descriptive usage of the term “driving licence” can be seen as referring to anything other than the document embodying the permission granted to an individual to drive a vehicle. As one might expect, there is no evidence to suggest that the term has been used in some extended sense to denote, not just the permission itself, but also the authority which currently oversees the granting of such permission in the Republic of Ireland, or its services. Indeed the identity of the Complainant is clearly and separately represented by means of its own name and logo, with which its website is branded.

Although the Complainant has not provided any evidence supporting its assertions concerning the quantity of traffic to its website, the volume of visitors is in fact immaterial in the absence of any evidence of use by the Complainant of the term in a manner which is capable of distinguishing the Complainant from other entities.

The Complainant also relies on media coverage accorded to the Complainant’s role as well as Google.ie results showing that its website “www.rsa.ie” ranks very highly for searches against “driving licence”. But, again, the Panel sees nothing whatsoever in those materials at coverage which suggests that the descriptive term “driving licence” has become is in some way distinctive of the Complainant itself.

In light of the lack of highly descriptive nature of the term “driving licence”, and the lack of any evidence showing that it has been used in a way which has become a distinctive identifier associated with the Complainant or its services, the Panel finds that it does not have sufficient information to conclude – even prima facie – that the term is, or has become, distinctive of the Complainant and/or its services.

The Panel concludes that the Complainant has failed to establish the existence of a “Protected Identifier” under paragraph 1.1 of the Policy.

In light of the Panel’s finding above, it is unnecessary to address the second and third factors of the Policy in any detail. The Panel stresses that this Decision is not intended to prejudge any other proceeding, and this Decision does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court if it considers that it has grounds to do so.